Examination of evidence of use as a Trade Mark India

The “market share” question will generally arise in the case of marks owned by large corporations. In India in a competitive business environment trade marks are used by also small traders in connection with small business. It is impracticable to require them to show “market share” held by the mark.  However where claims are made for recognition of a trade mark as wellknown trade mark, it will be appropriate to require details of market share held by the applicant under the mark applied for. Turnover, commencement of use and Period of Use Evidence should be in respect of the user of the mark, when first commenced and the period of use must be before the date of filing. Any use after that date should not be taken into account. If there have been gaps in the use, it will be necessary to consider how this affects the reputation of the mark applied for. For example, a strawberry grower may not be able to demonstrate sales throughout the year, but if he sells his strawberries for two months of the year every year for ten years, that is likely to be sufficient to illustrate continuous use, given the seasonal nature of his product. Another trader might sell goods under a
certain mark for twelve years, but there may be a two year gap leading up to the date of the application in which few or no sales took place. Before a judgement can be made about accepting or refusing the mark, it would be necessary to look at all the surrounding facts to see what effect that gap had. If sales weren’t particularly strong beforehand, the reputation of the mark may have been severely diminished. If, on the other hand, sales were very good both before and after, it may be that the gap would have no negative effects on the reputation at all.  Sales turnover figures should normally be given for the sales of goods/services under the mark over a period of about five years before the date of application. If the period of use is shorter, the turn over for the period in question should be considerable, having regard to the nature of goods. The greater the turnover, the more likely it is for the mark to be accepted. Turnover, advertising and period of use are considered together – massive turnover and/or advertising could compensate for a short period of use. Ideally, the turnover figures should be broken down to give the turnover relating to each class of goods/services. However, industry does not group its products according to the WIPO system of classification, so this may not be a practical proposition. There should however be sufficient breakdown of the goods/services to support a finding that the relevant public has been repeatedly exposed to the mark in use as a trade mark for all the goods/services for which acceptance is proposed. In the case of financial services, turnover figures may not always be the appropriate means to gauge the extent of use of the trade mark. For example, turnover figures which are merely the total amount loaned or insured by the applicant will give an inflated picture in relation to how well-known the mark is in terms of exposure to the relevant public.  However, a clear indication of the extent of use is required if the applicant is relying on this to demonstrate that the mark has acquired a distinctive character. In the case of financial services the number of account holders or investors and, if appropriate, the number and geographical spread of branches, could be used to demonstrate the extent of the use. Area of use Registration of trade mark is made generally on All India basis, unless otherwise the registration is limited to particular territory such as “for use in the state of ……” or “for use in the district of ………”. Such territorial restriction may be applied generally in the case of perishable goods such as milk products or vegetable products and not in the case of other consumer durables/FMCG.  For
export: Occasionally, turnover figures also include goods for export. These figures may also be taken into account when considering the strength of the evidence. If turnover relates to goods manufactured in this country which are only for export, the applicant stands in the same position as a proprietor with a purely local reputation. The evidence will not normally be sufficient to demonstrate that the mark has acquired a distinctive character amongst a significant proportion of the relevant public in India. In such cases, application may be accepted as “only for export”. If the use of the mark is only outside India, such use is irrelevant in this country. Expenditure on advertisement of trade mark Expenditure on advertisement of trade mark are normally provided for a period of 3 years or more prior to the date of filing of the application. The nature of the advertising should be given where possible e.g. television, radio, newspapers, trade magazines, etc. The Registry should see whether the advertising was nationwide or restricted to local areas. The figures should be broken down to show costs in relation to each class of goods/services where this is feasible.  The importance to be attached to advertising figures will very much depend on the goods/services at issue. For example, the advertisement expenditure between highly sophisticated goods or fast moving consumer goods would be totally different. There may be little or no advertisement expenditure for highly specialized products with a special market. e.g. aircraft market As against that the expenditure in relation to the promotion of toothpaste or cosmetics may be very high. In the case of some products of small value the company’s promotion of their products may be through catalogue informing the existing clients of their updated products,. It is therefore important to assess the
circusmtances of each case in assessing the quantum of expenditure on advertisement on trade marks. Exhibits – are required to show how the mark has been used and in relation to which goods/services. They may be, for example, brochures, catalogues, price lists, invoices, area of sales, advertisements, etc. All exhibits should be dated prior to the date of application.